NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

GOLDEN EYE MEDIA USA, INC.,

Plaintiff-Counterdefendant-Appellee

FARZAN DEHMOUBED, JENNIFER DUVALL,

Counterdefendants-Appellees

v.

EVO LIFESTYLE PRODUCTS LIMITED, FKA 

TROLLEY BAGS UK LTD,

Defendant-Counterclaimant-Appellant

______________________ 

2021-2096

______________________ 

Appeal from the United States District Court for the 

Southern District of California in No. 3:18-cv-02109-BENLL, Senior Judge Roger T. Benitez.

______________________ 

Decided: June 22, 2022

______________________ 

CODY R. LEJEUNE, LeJeune Law, PC, San Diego, CA, 

for appellees. 

 MATTHEW L. CUTLER, Harness, Dickey & Pierce, PLC, 

St. Louis, MO, for appellant. Also represented by Glenn E. 

Forbis, Troy MI.

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 ______________________ 

Before LOURIE, SCHALL, and REYNA, Circuit Judges.

LOURIE, Circuit Judge. 

Evo Lifestyle Products Limited, formerly known as 

Trolley Bags UK Ltd (“TB UK”), appeals from a decision of 

the United States District Court for the Southern District 

of California granting summary judgment in favor of 

Golden Eye Media USA, Inc. (“GEM”). The court held that 

TB UK’s U.S. Patent D779,828 (the “’828 patent”) is invalid 

for reasons of functionality and obviousness, and that, even 

if it were valid, GEM did not infringe the patent or TB UK’s 

trademark. See Golden Eye Media USA, Inc. v. Trolley 

Bags UK Ltd., 525 F. Supp. 3d 1145 (S.D. Cal. 2021) (“Decision”). We affirm. 

BACKGROUND

TB UK owns the ’828 patent. This patent is directed to 

a reusable and foldable shopping bag that fits within a 

shopping cart. Figures 1–6 illustrate the claimed design.

1'1 

!~ 

FIG. 1 FIG.2 FIG. 3 

FIG. 4 FIG.5 FIG.6 

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’828 patent at Figs. 1–6. TB UK also claims a common law 

trademark for “TROLLEY BAGS.” TB UK sells reusable 

shopping cart bags that use the mark “TROLLEY BAGS.” 

GEM sells reusable shopping cart bags that use the mark 

“LOTUS TROLLEY BAGS.”

In July 2017, TB UK sent a cease-and-desist letter to 

GEM, asserting that GEM’s sale of Lotus Bags infringed 

the ’828 patent and what it asserts is a “TROLLEY BAGS” 

common law trademark.1 In September 2018, GEM then 

brought a declaratory judgment action against TB UK in 

the district court. GEM requested that the court find that 

(1) GEM did not infringe the ’828 patent, (2) that the ’828 

patent was invalid for (a) obviousness over Doyle2 and 

Brennan,3 and (b) functionality, and (3) that GEM did not 

infringe TB UK’s common law trademark. Both parties 

then moved for summary judgment.

The district court granted GEM’s motion for summary 

judgment and held the ’828 patent invalid for functionality 

and obviousness, alternatively found that GEM did not infringe the ’828 patent, and found that GEM did not infringe 

TB UK’s common law trademark.

TB UK appealed the district court’s grant of summary 

judgment. We have jurisdiction pursuant to 28 U.S.C. 

§1295(a)(1).

1 As common law trademarks are created by use, see

In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366 

(Fed. Cir. 1999), this suit against products containing such 

a mark effectively concedes the mark’s existence.

2 Doyle, Irish Patent Pub. S2009/0718. Doyle is directed to a reusable bag system and is owned by TB UK.

3 Brennan et al., U.S. Patent 5,046,860. Brennan is 

directed to reusable shopping bag assemblies.

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DISCUSSION

We review the grant of summary judgment under the 

law of the regional circuit from which the case originates. 

See e.g., Grober v. Mako Prods., Inc., 686 F.3d 1335, 1344 

(Fed. Cir. 2012). The Ninth Circuit reviews a district 

court’s grant of summary judgment de novo. See e.g., 

Branch Banking & Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751, 

759 (9th Cir. 2017). Summary judgment is appropriate if, 

viewing the evidence in the light most favorable to the nonmoving party, the movant shows that there is no genuine 

dispute as to any material fact and the movant is entitled 

to judgment as a matter of law. See Whitman v. Mineta, 

541 F.3d 929, 931 (9th Cir. 2008); see also Celotex Corp. v. 

Catrett, 477 U.S. 317, 322 (1986).

I. Functionality

The district court held that the ’828 patent was invalid 

because its design was dictated by function. TB UK argues 

that the district court errs in that conclusion by asserting 

that it misapplied the Sport Dimension five-factor test relating to functionality. TB UK alleges that in the process 

of misapplying the test, the court failed to resolve disputed 

facts in favor of TB UK, the non-moving party, and applied 

the wrong legal standard, finding the patented design “dictated by function” instead of it being “dictated solely by 

function.” Appellant’s Br. at 13. GEM responds that the 

court properly applied the Sport Dimension test and correctly found the design of the ’828 patent to be dictated by 

function.

A district court’s finding that a patented design is dictated by function is reviewed for clear error. See Ethicon 

Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 

(Fed. Cir. 2015). For a design to be protectable by a design 

patent, “the design must not be governed solely by function, 

i.e., that this is not the only possible form of the article that 

could perform its function.” Rosco, Inc. v. Mirror Lite Co., 

304 F.3d 1373, 1378 (Fed. Cir. 2002). A design patent is 

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invalid if the design is “dictated by the utilitarian purpose 

of the article.” High Point Design LLC v. Buyer’s Direct, 

Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (internal quotation marks omitted). In determining whether a design is 

dictated by function, courts consider whether (1) “the protected design represents the best design,” (2) “alternative 

designs would adversely affect the utility of the specified 

article,” (3) “there are any concomitant utility patents,” 

(4) “the advertising touts particular features of the design 

as having specific utility,” and (5) “there are any elements 

in the design or an overall appearance clearly not dictated 

by function.” Sport Dimension, Inc. v. Coleman Co., 820 

F.3d 1316, 1322 (Fed. Cir. 2016). 

We agree with GEM that the district court did not commit clear error when it found the design of the ’828 patent 

to be functional. The “availability of alternative designs 

[is] an important—if not dispositive—factor in evaluating 

the legal functionality of a claimed design.” Ethicon, 796 

F.3d at 1329–30. After a thorough analysis, the court 

found that the horizontal poles of the claimed design were 

necessary for the purpose of the bag to fit in a cart while 

standing upright. See Decision at 1188. The court then 

found that an alternative design, for the poles or other features, would directly and adversely impact the functionality of the bag system and therefore that the first, second, 

and fifth Sport Dimension factors weighed in favor of invalidity. As for the third factor, whether there are any concomitant utility patents that shed light on the functionality 

of the U.S. design patent, the court found that Doyle, while 

owned by TB UK, was not classified as a utility patent in 

Ireland and that Brennan was not owned by TB UK. Based 

on these findings, the court found that this factor did not 

weigh in favor or against invalidity. 

The court noted that, regarding the fourth factor, TB 

UK’s advertisements touted the utility of the bags. The 

court cited numerous examples demonstrating this fact, including a statement from TB UK’s website boasting that 

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the bags “halve the time at the checkout as packing is 

quicker and easier without the hassle of holding bags 

open.” Decision at 1192. The court therefore found that 

this factor weighed in favor of invalidity. We consider that 

these findings are not clearly erroneous, and thus we affirm its holding that the design of the ’828 patent is dictated by function. We also find that there are no genuine 

issues of material fact precluding summary judgment. 

TB UK argues that the district court did not consider 

all the alternative designs presented, but that was not necessary. TB UK discussed two alternative designs: (1) using 

two, larger bags to fill a shopping cart, and (2) a bag system 

in which the designer chooses not to fill the entire capacity 

of a shopping cart with the bags. The court properly disposed of those alternatives when it mentioned that “the 

only evidence of alternative designs [TB UK has] presented 

is that their bags could be smaller or bigger such that they 

would or would not fill the entire cart” and that these alternatives “directly impact[] the utility of the [’]828 

[p]atent.” Decision at 1186. 

II. Obviousness

TB UK also appeals the district court’s invalidation of 

the patent on the ground of obviousness. Having affirmed 

the patent’s invalidity for functionality we need not go further and review the obviousness determination. But, in the 

interest of thoroughness and because we are not the court 

of last resort, see Cardinal Chemical Co. v. Morton Int’l, 

Inc., 508 U.S. 83 (1993), we will address that ground as 

well. 

TB UK argues that the district court should have found 

that factual issues preclude a finding of summary judgment. In addition, it argues that the court erred in deciding that Doyle was a primary reference and that secondary 

references could be combined with Doyle to invalidate the 

’828 patent. TB UK notes that the United States Patent 

and Trademark Office (“USPTO”) determined in its 

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reexamination that Doyle was not invalidating prior art 

and that it was too different from the design of the ’828 patent to be considered a primary reference. TB UK asserts 

that the USPTO’s determination underscores the incorrectness of the court’s conclusion that no genuine issues of material fact existed. 

GEM responds that the district court correctly determined that Doyle was a primary reference that exhibited 

design characteristics that were basically the same as in 

the ’828 patent. GEM adds that the court properly found 

that Brennan was a secondary reference that could have 

been combined with Doyle to create a design with the same 

overall visual appearance as the claimed design of the ’828 

patent. 

Obviousness is a question of law that is reviewed de 

novo, based on underlying factual questions that are reviewed for clear error. Honeywell Int’l, Inc. v. United 

States, 609 F.3d 1292, 1297 (Fed. Cir. 2010). The underlying factual inquiries include: (1) the scope and content of 

the prior art; (2) the level of ordinary skill in the art; (3) the 

differences between the claimed invention and the prior 

art; and (4) objective evidence of non-obviousness. Graham 

v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966). Summary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the 

level of ordinary skill in the art are not in material dispute, 

and the obviousness of the claim is apparent in light of 

these factors.” TriMed, Inc. v. Stryker Corp., 608 F.3d 

1333, 1341 (Fed. Cir. 2010) (citing KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 427 (2007)).

A determination of obviousness in design patents requires a two-step inquiry designed to determine whether a 

designer of ordinary skill in the art would have combined 

prior art references to create a design with the same overall 

visual appearance as the claimed design. See Durling v. 

Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). 

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The first step is to identify “a single reference, ‘. . . something in existence, the design characteristics of which are 

basically the same as the claimed design.’” Id. (quoting In 

re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982)). To determine 

if a design is “basically the same,” the court looks to the 

“visual impression created by the patented design as a 

whole.” Id. This court has noted that “the trial court judge 

may determine almost instinctively whether the two designs create basically the same visual impression,” but 

“must communicate the reasoning behind th[at] decision.” 

Id.

In the second step, other references “may be used to 

modify [the primary reference] to create a design that has 

the same overall visual appearance as the claimed design.” 

Id. These secondary references must be “so related [to the 

primary reference] that the appearance of certain ornamental features in one would suggest the application of 

those features to the other.” Id.

We agree with GEM that the design of the ’828 patent 

was properly determined to have been obvious at the time 

it was created. In step one, the district court properly considered Doyle to be a primary reference. Despite Doyle 

having a different handle design and location, horizontal 

rods that differ in length and design, and a less rectangular 

shape compared to the ’828 patent’s design, the court concluded that the two designs created “basically the same” 

visual impression:

Doyle Patent: '828 Patent: 

,.,, 

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Decision at 1198. 

The district court’s conclusion is consistent with our 

precedent where we have found that primary references 

may contain slight differences relative to a patented design. See Spigen Korea Co. v. Ultraproof, Inc., 955 F.3d 

1379, 1383 (Fed. Cir. 2020) (explaining that “slight differences” do not preclude a “basically the same” finding). Regarding the difference in the handles, the court noted that 

“the Doyle Patent merely illustrates the flexibility of the 

handles while the [’]828 patent shows the handles in an 

upright position.” Decision at 1206. The court next concluded that any perceived difference in the length of the 

bag’s horizontal rod is slight and does not preclude a finding that the bags are “basically the same.” Lastly, the court 

also found the difference in the shape of the bags to be only 

slight. These findings regarding the differences between 

Doyle and the ’828 patent are not clearly erroneous, and 

thus we find that the court properly considered Doyle to be

a primary reference.

In step two, the district court properly analyzed multiple secondary references and concluded that the combination of Doyle as a primary reference and Brennan as a 

secondary reference rendered the ’828 patent obvious. 

Brennan contains similar handle stitching to the ’828 patent, and these handles combined with the bag shape and 

handles of Doyle would create a shopping cart bag that 

highly resembles the one claimed by the ’828 patent:

Decision at 1204.

+ Brennan 

,,. , • I 

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The district court therefore did not commit clear error 

by combining Doyle and Brennan and determining that the 

combination of these two references would have rendered 

the ’828 patent obvious. Thus, we affirm the court’s holding that the combination of Doyle and Brennan invalidated

the ’828 patented design for being obvious.

In light of our affirmance of the district court’s separate 

holdings of invalidity on both functionality and obviousness, the court’s decision addressing infringement is moot. 

We thus do not address TB UK’s appeal from that portion 

of the court’s decision. 

III. Trademark Infringement

TB UK argues that the district court improperly 

weighed and critiqued underlying evidence when conducting its likelihood of confusion analysis relating to the trademark claim. GEM responds that TB UK failed to present 

any evidence showing a likelihood of confusion, and the 

court properly found that there was no genuine dispute of 

material fact concerning likelihood of confusion.

We have jurisdiction over the appeal of the district 

court’s summary judgment ruling against TB UK’s trademark infringement claim because it was part of a complaint containing non-frivolous claims of patent 

infringement. See Atari, Inc. v. JS & A Grp., Inc., 747 F.2d 

1422, 1427–30 (Fed. Cir. 1984) (discussing appellate jurisdiction over copyright and other non-patent issues in the 

Federal Circuit when a complaint also includes a claim 

arising under patent law); see also Zenith Elecs. Corp. v. 

Exzec, Inc., 182 F.3d 1340, 1346 (Fed. Cir. 1999) (“Because 

the complaint contained patent infringement claims, the 

district court’s jurisdiction arose under 28 U.S.C. § 1338(a). 

This established the path of appeal, giving exclusive jurisdiction in this court pursuant to . . . [] 1295(a)(1).”); Abbott 

Lab’ys v. Brennan, 952 F.2d 1346, 1349–50 (Fed. Cir. 1991) 

(“The path of appeal is determined by the basis of jurisdiction in the district court, and is not controlled by the 

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district court's decision or the substance of the issues that 

are appealed."). 

"In a trademark case, we apply the law of the applicable 

regional circuit, in this case, the Ninth Circuit." Nautilus 

Grp., Inc. v. ICON Health & Fitness, Inc. , 372 F.3d 1330, 

1334 (Fed. Cir. 2004). "Likelihood of confusion is the type 

of mixed question [that is] suited to clearly erroneous review." Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 

1355 (9th Cir. 1985) (en bane). The Ninth Circuit examines 

eight factors when evaluating trademark infringement 

claims. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-

49 (9th Cir. 1979). These eight factors are: (1) strength of 

the mark, (2) proximity of the goods in trade channels, 

(3) similarity of the marks, (4) evidence of actual confusion, 

(5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser, (7) defendant's intent in selecting the mark, and (8) likelihood of 

expansion of the product lines. Id. 

vVe agree with GEM that the district court properly analyzed the Sleekcraft factors and held that there was no 

genuine dispute of material fact as to noninfringement of 

TB UK's "TROLLEY BAGS" trademark. In analyzing the 

"trolley bag" logo of GEM's product and TB UK's product, 

the court first noted that the two logos were markedly different: 

GEM's Logo TB UK's Logo 

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See Decision at 1220. A quick inspection, see above, shows 

the words TROLLEY BAG to be of quite different size and 

location in the overall mark, and the colors are also very

different. Despite these differences, the court construed TB 

UK’s trademark infringement claims to pertain to the use 

of “TROLLEY BAG” in each logo. Under this construction, 

the court analyzed each of the Sleekcraft factors and found 

that, while the proximity of the goods factor weighed in TB 

UK’s favor, all other factors weighed in GEM’s favor. The 

court also noted that, despite both marks using the 

“TROLLEY BAG” term, the dominance of other logos on 

the bags, distinctive coloring, and overall appearance made 

the marks dissimilar. Lastly, the court pointed out that TB 

UK failed to provide evidence of actual confusion from use 

of the marks. For these reasons, the court found that there 

was no genuine dispute of material fact as to the likelihood 

of confusion and that TB UK’s common law trademark was 

not infringed. The court’s analysis of the Sleekcraft factors 

was not clearly erroneous, and we do not find any instance 

where the court overstepped its role by improperly weighing and critiquing underlying evidence. Thus, we affirm 

the court’s holding that the “TROLLEY BAGS” common 

law trademark was not infringed.

CONCLUSION

We have considered TB UK’s remaining arguments but 

find them unpersuasive. For the foregoing reasons, the decision of the district court is affirmed. 

AFFIRMED

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